by kbhilfer on May 15, 2013
If you are an artist who licenses your art, you may be packing your bags as you read this and heading to New York for the annual SURTEX show, the self-proclaimed “marketplace for original art and design.” While your focus now is primarily on creating and transporting your art as you travel to New York, here are some last minute legal tips as you enter the art licensing arena.
- Protected your copyrights and register your artwork. Your artwork is your livelihood. It’s worth the expense to file to register your copyrights before you display at the show. You can certainly file the art as a collection to save some money. If you missed this crucial step before the show, do it as soon as you return home. Filings must be done within three (3) months of first publication to obtain all the statutory benefits of copyright registration.
- Check your insurance. The Javits Center is a wonderful venue, but even in the best location, problems can occur. Last year, torrential rains plagued New York City during the show, and a leak at the Center destroyed the art at a few unlucky booths. Do you have business interruption insurance? Even more importantly, do you have back-ups of your art stored digitally?
- Consider your policy on photography at your booth. You’ve worked hard to set up your booth and display your art to its best advantage. Have you considered what might happen if someone photographs your art and posts to Instagram? Suddenly, you may have lost control of your most valuable assets and their copyrights. While it is impossible to prevent all surreptitious photography, you can post a “No Photography” sign at your booth. You also can and should politely ask obvious photographers to stop. At the same time, consider which art you give away as samples. Perhaps, it should not be your newest signature collection. Also try to have visitors and samplers sign a log so you have a record of who had access to your art.
- Audit your existing licenses. If you have already licensed your art, spend a few hours considering your existing licenses. What has worked for you? What has not? Were the term, territory, and categories of license adequately defined? Have you been paid on time? Did you have any trouble confirming the veracity of royalty payments? Were there quality problems? Did the licensee demand too many revisions? Did the existence of one licensing deal prevent you from entering into another more profitable deal? Conducting an internal audit will allow you to show at SURTEX with more clear goals.
- Be fully conversant with legal concepts. Even if you have never entered into an art licensing deal before or are an expert, review the essential legal terms of an art licensing deal. (For a review of these concepts, click here.) These include category definitions, territory, term, exclusivity, compensation tools such as guarantees and advances, and warranties and indemnities. Even though you will not be negotiating your deals at SURTEX, it is a good idea to keep these concepts in mind when having preliminary conversations with possible licensees. Knowing your end game will strengthen your negotiation skill.
- Be flexible. Artists hope that their portfolios will speak for themselves, but often, licensees will see the art in your booth as only a sample. They will want to know that you can produce art in your admirable style that they believe will sell. Your flexibility is a key contributor to whether licensees want to do business with you. At the same time, you want to be sure that you are not so flexible that you are not adequately compensated. Your contract can help with these factors, but you should be considering this issue from the moment you meet.
- Consider quality control. While it’s exciting when a representative approaches your booth and has interest in your artwork, you should ask questions too. This may be your only opportunity to meet face-to-face. Use your conversation to assess the licensee, its reputation, its honesty, its fairness, and its quality. In particular, ask questions about quality control over the manufacturing process. Consider the Bangladesh disaster in the garment industry last month. Having your art associated with a sweatshop death trap or a factory that produces products with toxic dyes will not help your business grow.
- Leave your booth. It’s difficult, especially if you’ve travelled to SURTEX alone, to leave your booth. At the same time, it’s important to take a little time to walk the show. You need to assess the trends in the marketplace. In addition, to understand fully the broad meaning of “Surface Textiles,” you need to see what the category means in today’s three-dimensional and technology driven world. You may see applications for your artwork that you had not considered. For instance, a hot trend in branding is the “fluid trademark.” These trademarks change and take on different forms, usually with the assistance of artwork. (Think “Google” and its daily reincarnation with the help of great artists.) Is there a trend that requires artists’ collaboration that you had not considered? You will not know if you stay rooted to your booth.
For more information about evaluating art licenses, click here. Have a great show!
by kbhilfer on April 25, 2013
Trademark protection is a key part of corporate due diligence, serving to improve the value of company’s chief intangible assets. Too many business owners, however, mistakenly believe that seeking trademark protection merely involves filing a form with the United States Patent and Trademark Office (USPTO). They forego legal counsel, assuming they can secure protection themselves and save some money. In the end, they are often surprised by the complexity of the trademark registration process. Here are seven traps that often befall do-it-yourself trademark applicants.
- Choosing a problematic name. Many proprietors want to name their storefronts after themselves. They will be surprised down the road, however, to discover that the USPTO may reject their trademark application because it contains a surname. Similarly, establishments that include geographic descriptors (e.g. “Main Street Ice Cream”) or generic terms (e.g. “Acme Tires”) may not be available for registration. Working with a trademark attorney before commiting to a name can help avoid these traps. She will know the exceptions to automatic refusals and the arguments that can potentially overrule a refusal. The right name makes it easier to promote a business.
- Overlooking a trademark search. Commonly, business owners confuse their corporate filings with their trademark filings. They assume if the name is available with the Secretary of State that the name is free to use in the marketplace. In reality, reserving a corporate name in no way means that the name is available as a trademark. Only a full trademark search done through specialized databases, not a Google search, can provide a full overview of market usages. That search then should be analyzed based on existing trademark case law to determine whether a mark is available for use and/or registration.
- Improperly describing the goods/services in the application. Many filers make the mistake of describing their goods or services too broadly or too narrowly and therefore inadequately describing their businesses’ goods or services. In fact, ambiguity in listing the goods and services is a common cause of delayed or even rejected trademark applications. A trademark attorney will know based on previous experience what wordings the USPTO will find acceptable, saving the applicant time and money in the long run.
- Redesigning one’s logo. After the business has designed its perfect logo and filed its trademark application, the marketing team may decide to move a line or change a Pantone color. In so doing, the team inadvertently may have jeopardized any pending application for trademark protection. A trademark attorney, on the other hand, will help determine when the design is far enough in development that it is the appropriate time to file for protection.
- Ignoring the marketplace. Trademark infringement occurs when consumers are likely to be confused between two trademarks. Without the proper due diligence and analysis, a business may choose a name that infringes on another’s preexisting rights. Take, for example, the fifteen-year battle between Patsy’s Restaurant and Patsy’s Pizzeria in New York. In some cases, even a foreign restaurant may claim trademark infringement. In one case, a court granted injunctive relief to the French restaurant “Maxim’s” against a NYC restaurant, noting the French restaurant’s priority based on uninterrupted use of the mark abroad and the fame of the mark in New York City. In short, the do-it-yourself trademark applicant is likely unprepared to evaluate the legal standard of “likelihood of confusion,” leaving a business vulnerable to legal challenge.
- Improper Specimen. Do-it-yourself trademark applications frequently submit improper specimens. Business cards and website pages may not suffice to show use in interstate commerce. The result will be delay and added expense or even rejection of the trademark application. It’s worth the consultation with experienced counsel to submit an application that has all the correct component parts.
- Use in Interstate Commerce. Showing use in interstate commerce is a requirement for a federal trademark application. Too many business owners who go it alone do not understand what this means from a legal perspective. As a result, even if the trademark proceeds to registration, it is subject to challenge and even cancellation by a competitor. The last thing a business owner would want is to lose a trademark into which it has invested time and money. Imagine having to lose years of good will if it can be determined that your trademark application was based on false statements. In addition, there is potential culpability for the person who signed the application. Again, checking in with experienced counsel can avoid this drastic problem.
An improperly filed trademark application can adversely affect the scope of an owner’s trademark rights and open the door to a third party challenge. The mistakes above can cause delay and lost filing fees at a minimum. At the maximum, they can create significant legal risk for a business, exposing it to claims for trademark infringement and unfair competition claims. Consulting a trademark attorney before filing prevents costly mistakes and ensures that trademark rights accrue properly to held build the brand and the value of the intellectual property.
Copyright 2013 Kyle-Beth Hilfer, P.C.
